Third Party Requester identifies several points that they contend were “misapprehended or overlooked” in rendering the Decision. See 37 C.F.R. § 41.79(b). We address them below.

● “The Patent Office must provide an explanation as to why claims from this reexamination having all of the same language from claim 1 are deemed obvious, yet claim 1 is not.” Req. Reh‟g 1.

How did this happen?

Requester compared claim 1 and claims 40 and 41, and showed that claims 40 and 41 simply incorporated additional limitations to claim 1, and thus were narrower than claim 1. Req. Reh‟g 2-3. Yet, claim 1 was determined by the Examiner to be patentable over other prior art. Examiner„s Determination under 37 CFR 41.77(d), p. 5, “Current Status of the Claims”; Board Decision, p. 16.
As argued by Requester, there appears to be a contradiction in the record: if claims 40 and 41 are not patentable over the prior art cited in Rejections A-D, then how can broader claim 1 be patentable? The discrepancy arose procedurally because the addition of new claims 40 and 41 by Patent Owner prompted Requester to propose new rejections. See Third Party Requester Comments after Patent Owner‟s Request to Reopen Prosecution (July 5, 2011). Requester did not apply these new rejections to claim 1 because it was procedurally uncertain whether they were permitted to do so at this stage in the proceeding where the prosecution had only been opened for the purpose of making a determination of the patentability of claim 1 over an existing rejection. See id. at 50. Requester stated: “In an effort to avoid any appearance of non-compliance, the Requester does not formally submit these four grounds for rejection against original claim 1 but rather leaves such a consideration to the discretion of the Patent Office.” Id. Initially, the Examiner considered the proposed rejections as to claims
40 and 41 and adopted them, but did not apply the rejections to claim 1 which is broader. While procedurally it may be have been proper for the Examiner to proceed in this way, we agree with the Requester that by adopting the rejections A-D of claims 40 and 41 in the Examiner‟s Determination under 37 CFR § 41.77(d), and not of the broader claim 1 which has the same but fewer limitations, there is an open question of whether claim 1 is unpatentable over this same prior art, and should have been so rejected.

The Board reversed the examiner on this point and entered new grounds of rejection [37 C.F.R.
§ 41.77(b)-(g). ] The cecsion also noted:

Any request to reopen prosecution before the examiner under 37 C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.” Accordingly, a request to reopen prosecution is limited to issues raised by the new ground(s) of rejection entered by the Board. A request to reopen prosecution that includes issues other than those raised by the new ground(s) is unlikely to be granted. Furthermore, should the patent owner seek to substitute claims, there is a presumption that only one substitute claim would be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response. 37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be limited in scope to the issues raised by the Board's opinion reflecting its decision to reject the claims and the patent owner's response under paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A newly proposed rejection may be appropriate if it is presented to address an amendment and/or new evidence properly submitted by the patent owner, and is presented with a brief explanation as to why the newly proposed rejection is now necessary and why it could not have been presented earlier.

Elsewhere in the decision:

For the reasons stated in the Decision, we do not agree that sufficient evidence has been provided that Bray‟s drawings are drawn to scale and necessarily describe the lock as covering a portion of the bone screw holes. “Inherent anticipation requires that the missing descriptive material is „necessarily present,‟ not merely probably or possibly present, in the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002).

Holmes mentions to Watson Jeremy Bentham as the father of modern criminology: free will.

The company "Watt Helix." The "warrior gene." Line: "my funding dried up." CAA comes from a mutation of the MPP gene.

I would rather question a scientist than a businessman. Natasha Kademan's monograph: warrior gene.

Issue of Benny Cordero complaining that Natasha used Bennie's blood without permission. Natasha labelled him an incurable sociopath.\

Kirian Boyd portrait has spots of Benny's blood. [Holme's can't prove the blood wasn't there, but has to look into "possibility two."]

Image of Holmes playing with molecular models. Refers to resultant molecule as a dinosaur. Polycyclic hydrocarbon family member is a mutagen.

Main Moon dry cleaning run by Russians. Security cameras.

STR analysis tests 13 loci against each other. You can fake a match of 13 loci. In Benny's case, there were no other loci present in the blood sample. Manufacture a DNA sample. Sample designed to look that way. UBN Pharmaceutical. The boyfriend killed Natasha. The boyfriend had the warrior gene. Lincoln Dunwoody.

Murder plot: create CAA in leaders of philanthropic foundation in order to generate more funding for CAA research. Brian Watt, the founder of Watt Helix, was the culprit. He suffered from hereditary CAA.

Thus, the crimes were done in order to secure research funding.

[Elsewhere, a huge sinkhole in the Garden State Parkway.]

Of other CBS shows involving IP, the episode "Paʻani" "The Game" [on Feb. 18, 2013] involved corporate espionage. The twist was that the stolen information revealed the technology of the company did NOT work, and the disclosure would damage the fraudster CEO, rather than allowing competitors to copy useful technology.

More in Middleton v. Minnesota Mining

Is Proterro the only company making sucrose photosynthetically from cyanobacteria?

Proterro's website states Proterro is the only company that makes sucrose instead of extracting it, lowering the cost of sugar for the economical and scalable production of biofuels and biobased chemicals.Biofuels Digest wrote on 18 Dec. 2012: Where other companies are growing sugars via crop improvements, or extracting them, Proterro is making them via synthetic biology. Specifically, they have engineered a cyanobacteria to make sucrose (via a series of steps you can read all about here), ultimately from CO2, water, sunlight and nutrients – and secrete it into a sugarwater stream that can be purified into affordable sucrose.

However, Joule's US patent no. 8,227,237, issued July 24, 2012, months before the Biofuels Digest piece, has a first claim:

A method for the biogenic synthesis of sucrose for biofuel production, comprising: culturing an engineered photosynthetic microbe in a culture medium, wherein said photosynthetic microbe comprises a glucose facilitated diffusion transporter, wherein said glucose facilitated diffusion transporter has an amino acid sequence identical to the sequence encoded by nucleotides 2680-4105 of SEQ ID NO: 11, and wherein one or more glycogen synthesis genes in said photosynthetic microbe are attenuated or absent by mutation; and exposing said engineered photosynthetic microbe to light and carbon dioxide, wherein said exposure results in the conversion of said carbon dioxide by said engineered photosynthetic microbe into sucrose, wherein the amount of sucrose exported by said microbe is at least two-fold greater than the amount of said sucrose exported by an otherwise identical photosynthetic microbe, cultured under identical conditions, but lacking said recombinant glucose facilitated diffusion transporter and lacking said mutation in said one or more glycogen synthesis genes which attenuates or renders absent the expression of said one or more glycogen synthesis genes.

Within the specification of US '237:

Example 57

Engineered Microorganisms Producing Glucose

pJB336 was constructed in the following manner. A synthetic DNA kan cassette (DNA2.0) was subcloned via flanking Pad and AscI restriction sites into vector pJB303. This kan cassette comprises a promoter, active in both E. coli and JCC1, driving expression of gene aph that confers resistance to kanamycin in both organisms. pJB303 contains a synthetic DNA region (DNA2.0) comprising an upstream homology region (UHR) and a downstream homology region (DHR) flanking a multiple cloning region that includes Pad and AscI sites. The UHR corresponds to coordinates 1615342 to 1615841, the DHR to coordinates 1617346 to 1617845, of the JCC1 genome (Genbank Accession NC.sub.--010475), respectively. The UHR and DHR mediate homologous recombinational integration of heterologous DNA flanked by these regions into the JCC1 chromosome. In the case of SfiI-linearized pJB336, recombination occurs in such a way that the JCC1 glgA1 gene encoding glycogen synthase 1 (SYNPCC7002_A1532; Genbank Accession YP.sub.--001734779) is deleted, and replaced by a kan cassette. The SfiI-flanked DNA sequence contained within pJB336 is shown as SEQ ID NO: 8. (...)

To fully segregate recombinants, a small population (10-20) of kanamycin-resistant colonies from this initial plate was streaked onto an A+50 .mu.g ml.sup.-1 kanamycin plate, and grown as above; a small population (10-20) of kanamycin-resistant colonies from this second plate was then streaked onto an A+75 .mu.g mY.sup.1 kanamycin plate, and grown as above. Genomic DNA was prepared from a single candidate JCC475 colony from this third plate and checked for complete segregation by PCR. For pJB336 and all other constructs, this involved checking for the presence of (i) the upstream recombinant junction, (ii) the downstream recombinant junction, and (iii) the heterologous gene(s), and the absence of the deleted wild-type gene (glgA1 or glgA2). Transformation of pJB342, pJB345, and pJB348 into JCC475 was carried out as described above except that kanamycin was included in all plates to maintain selection for the glgA1::kan disruption in JCC475, and spectinomycin was used as the selective antibiotic--first at 25 .mu.ml.sup.-1, then at 50 .mu.ml.sup.-1, and finally at 75 .mu.ml.sup.-1. (...)

Although GC-MS analysis indicated only basal levels of glucose were present in the growth medium of JCC547, it was apparent that there were several other ion chromatogram peaks only present, or present with larger areas, in this strain and not in JCC342c, JCC543, or JCC545. One of these peaks was positively identified as sucrose based on authentic standard analysis, as shown in Table 19 and FIG. 17. Based on the concentration of sucrose used in the authentic standard analysis, and assuming that the TIC peak area observed scales linearly with this known sucrose concentration, it was estimated that the JCC547 culture medium contained approximately 600 mg liter.sup.-1 sucrose, approximately 100 times that seen in JCC342c, JCC543, or JCC545. No maltose was observed in any of the four strains' culture media.

The P.sub.trc-yihX-glf cassette in JCC547 therefore resulted in significantly higher sucrose production than observed in an isogenic control strain. A possible reason for this is that the Glf transporter is able to mediate the export of sucrose that is naturally synthesized, and otherwise maintained, within the cell. There are no reports of Glf being able to mediate transport of disaccharides such as sucrose. Glf has been reported as being able to mediate transport of glucose and, to a much lesser degree, fructose. However, the notion of Glf-mediated disaccharide export was supported by the GC-MS analysis of the culture medium of JCC547. As mentioned above, GC-MS indicated several ion chromatogram peaks that were only present, or present with larger areas, in this strain and not in JCC342c, JCC543, or JCC545. Consistent with these peaks representing disaccharides, many of these peaks were characterized by a dominant m/z 361 ion, which is diagnostic of TMS-derivatized disaccharides [Molnar-Perl et al., Chem. Mater. Sci., 45:321-327 (1997)], as shown in Table 20. Because none of the authentic disaccharide standards that were used eluted at the times indicated in the table above, none of these corresponding peaks could be identified with certainty. However, given the presence of the m/z 361 ion in all, it is highly likely that these peaks represent disaccharide or disaccharide-like molecules, most likely synthesized naturally within the cell.

The issued Joule patent derived from application 13/174,580, file June 30, 2011. The cross-reference section of the issued patent notes:

Wednesday, February 20, 2013

Supreme Court decides Gunn v. Minton

Federal courts have exclusive jurisdiction over cases “arising under any Act of Congress relating to patents.” 28 U. S. C. §1338(a). The question presented is whether a state law claim alleging legal malpractice in the handling of a patent case must be brought in federal court.

We agree with GuideTech, however, that the district court erred when it granted summary judgment that Brilliant does not infringe under the doctrine of equiva- lents. To find infringement under the doctrine of equiva- lents, any differences between the claimed invention and the accused product must be insubstantial. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950). One way of proving infringement under the doctrine of equivalents is to show, for each claim limita- tion, that the accused product “performs substantially the same function in substantially the same way with sub- stantially the same result as each claim limitation of the patented product.” Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009). This is a question of fact. Id.; Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1313 (Fed. Cir. 2003).

Of vitiation:

The vitiation concept has its clearest application “where the accused device contain[s] the antithesis of the claimed structure.” Planet Bingo, LLC v. Game Tech Int’l, Inc. 472 F.3d 1338, 1345 (Fed. Cir. 2006). This makes sense; two elements likely are not insubstantially different when they are polar opposites. As we explained in Deere, “[c]ourts should be cautious not to shortcut this inquiry by identifying a ‘binary’ choice in which an element is either present or ‘not present.’ Stated otherwise, the vitiation test cannot be satisfied by simply noting that an element is missing from the claimed structure or process because the doctrine of equivalents, by definition, recognizes that an element is missing that must be supplied by the equivalent substi- tute.” Deere, _ F.3d at _, 2012 WL 6013405, at *5. (...)
The concept of vitiation is an acknowledgement that each element in the claim must be present in the accused device either literally or equivalently. And we have applied this con- cept to cases where we have recognized that two alterna- tives exist that are very different from each other and therefore cannot be equivalents for infringement purpos- es. See, e.g., Planet Bingo, 472 F.3d at 1345 (concluding that determining a winning combination after a game starts was not equivalent to determining a winning combination before the game starts); Moore U.S.A., Inc. v. Std. Register Co., 229 F.3d 1091, 1106 (Fed. Cir. 2000) (“[I]t would defy logic to conclude that a minority—the very antithesis of a majority—could be insubstantially different from a claim limitation requiring a majority, and no reasonable juror could find otherwise.”).

Judge Dyk partially dissented:

I agree with the majority with respect to the ’231 pa- tent, and with its holding that there is no literal in- fringement of the ’671 patent and ’649 patent. However, I disagree with the majority that a genuine issue of materi- al fact remains as to infringement of the ’671 and ’649 patents under the doctrine of equivalents.

AND

Similarly, we have recently reiterated that “[r]egardless [of] how the equivalence test is articu- lated, ‘the doctrine of equivalents must be applied to individual limitations of the claim, not to the invention as a whole.’” Mirror Worlds, LLC v. Apple Inc., 692 F.3d 1351, 1357 (Fed. Cir. 2012) (quoting Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997) (emphasis added)). This guidance to consider each claim limitation under the doctrine of equivalents flows from the principles of claim vitiation, which require a determi- nation of whether there is a substantial difference or a difference in kind between each individual claim limita- tion and the accused product. See Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1355 (Fed. Cir. 2010).
While Dr. West purports to follow this guidance, in fact Dr. West’s report is inconsistent with the approach articulated in the cases.

AND

Once Brilliant brought forth expert evidence that its devices were outside the scope of the claim limitations under a doctrine of equivalents analysis, the burden fell on “the nonmoving party [in this case, Guidetech] to set forth specific facts showing that there is a genuine dispute for trial.” Minkin v. Gibbons, P.C., 680 F.3d 1341, 1349 (Fed. Cir. 2012); Shum v. Intel Corp., 633 F.3d 1067, 1076 (Fed. Cir. 2010). This Guidetech did not do. Indeed, given that no evidence exists showing that Brilliant’s accused products met the “with respect to” portion of the relevant limitation under the doctrine of equivalents, Brilliant merely needed to point out, as it did, “that there is an absence of evidence to support [Guidetech’s infringement] case.” Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986).

Calculations fail in Ex parte Trosman

Along those same lines, Appellants argue that the combination of Orii and Ueda proposed by the Examiner would destroy the intended function of Orii, and that the addition of Johansson with Orii and Ueda would cause Orii to be inoperable for its intended purpose. App. Br. 18. Appellants assert that “the Examiner disregards the extent of experimentation described by Orii.” Id. According to Appellants, “such casual manipulation of Orii’s rigorously defined part- length rod orientations, using only the general teachings of Ueda, renders the Orii reference inoperable for its intended purpose” and the proposed “combination of Johansson with Orii and Ueda would violate the conditional Equations of Orii.” App. Br. 18-19.
The conditional equations, or “Inequalities,” as characterized by the Examiner (Ans. 9), alluded to by Appellants are Equations 1, 11, 3, 4, 15, and 6 set forth by Orii at column 3, lines 25-43. We agree with the Examiner that these conditions, expressed as inequalities, leave a substantial degree of latitude for compliance (see Ans. 9), and we reject Appellants’ argument that application of these inequalities would require significant calculation and additional experimentation to ensure satisfaction of the expressed conditions. In fact, the Examiner performed the calculations to show that the Orii configuration modified as proposed by the Examiner satisfies the mathematical conditions set forth by Orii.

KSR kills off archery bow claims

In combination:
an archery bow which comprises a riser and first and
second limbs extending in opposite directions from opposite ends of said riser;
at least one pair of components for modifying the decay patterns of the vibrations set up in the bow limbs when an arrow is released; and
a component attachment mechanism mounting one of the pair of vibration decay pattern modifying components to each of the first and second bow limbs;

KSR is cited:

In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior art," and reaffirmed principles based on its precedent that "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-16 (2007). The Court further explained that "[i]f a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability" and the operative question is "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id. In this regard, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421.

AND

KSR, 550 U.S. at 418-19 ("the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim" and "obviousness analysis cannot be confined ... by overemphasis on the importance of published articles and the explicit content of issued patents."); see also In re Kahn, 441 F.3d at 987-88.

As to the use of "unexpected results" to rebut a prima facie case of obviousness:

Only those arguments actually made have been considered in this
decision. Arguments that could have been made but not set forth in the briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).

Tuesday, February 19, 2013

Getting a patent by omitting an element from a prior art combination

In Ex parte PEREZ-CRUET , the Board discusses the law on patentability of a combination derived from omitting an element from a prior art combination:

On the evidence of record, we affirm, as the Examiner’s reasoning is consistent with precedent:

While the omission of an element in a combination may constitute invention
if the result of the new combination be the same as before, yet, if the omission of an element is attended by
a corresponding omission of the function performed by that element,
there is no invention if the elements retained perform the same function as before.
Richards v. Chase Elevator Co., 159 U.S. 477, 486 (1895).
See also, In re Karlson, 311 F.2d 581, 584 (CCPA 1963)
(“It is well settled, however, that omission of an element and its function
in a combination is an obvious expedient if the remaining elements perform
the same functions as before.”); In re Luce, 304 F.2d 899, 901 (CCPA 1962)
(similar, citing Richards); In re Miller, 197 F.2d 340, 341 (CCPA 1952) (similar, citing Richards).

Separately, as to analogous art:

“‘A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.’ In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
In other words, ‘familiar items may have obvious uses beyond their primary purposes.’ KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, [402], 127 S.Ct. 1727, 1742 (2007).” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (finding a reference describing a folding bed analogous to appellant’s folding treadmill).

In Ex parte Kwon, a panel of the Patent Trial and Appeal Board, citing to In re Vaeck,947 F.2d 488, 493 (CAFC 1991 ) , asserted that a reasonable expectation of success is a necessary part of a prima facie case of obviousness.

Vaeck is a case about cyanobacteria, and preceded by more than 15 years the Supreme Court decision in KSR.

The following is some text from Vaeck:

Where claimed subject matter has been rejected as obvious in view of a combination of prior art references, a proper analysis under § 103 requires, inter alia, consideration of two factors: (1) whether the prior art would have suggested to those of ordinary skill in the art that they should make the claimed composition or device, or carry out the claimed process; and (2) whether the prior art would also have revealed that in so making or carrying out, those of ordinary skill would have a reasonable expectation of success. See In re Dow Chemical Co., 837 F.2d 469, 473, 5 U.S.P.Q.2d 1529, 1531 (Fed.Cir.1988). Both the suggestion and the reasonable expectation of success must be founded in the prior art, not in the applicant's disclosure. Id.

We agree with appellants that the PTO has not established the prima facie obviousness of the claimed subject matter. The prior art simply does not disclose or suggest the expression in cyanobacteria of a chimeric gene encoding an insecticidally active protein, or convey to those of ordinary skill a reasonable expectation of success in doing so. More particularly, there is no suggestion in Dzelzkalns, the primary reference cited against all claims, of substituting in the disclosed plasmid a structural gene encoding Bacillus insecticidal proteins for the CAT gene utilized for selection purposes. The expression of antibiotic resistance-conferring genes in cyanobacteria, without more, does not render obvious the expression of unrelated genes in cyanobacteria for unrelated purposes.

The PTO argues that the substitution of insecticidal Bacillus genes for CAT marker genes in cyanobacteria is suggested by the secondary references Sekar I, Sekar II, and Ganesan, which collectively disclose expression of genes encoding Bacillus insecticidal proteins in two species of host Bacillus bacteria (B. megaterium and B. subtilis ) as well as in the bacterium E. coli. While these references disclose expression of Bacillus genes encoding insecticidal proteins in certain transformed bacterial hosts, nowhere do these references disclose or suggest expression of such genes in transformed cyanobacterial hosts.

To remedy this deficiency, the PTO emphasizes similarity between bacteria and cyanobacteria, namely, that these are both procaryotic organisms, and argues that this fact would suggest to those of ordinary skill the use of cyanobacteria as hosts for expression of the claimed chimeric genes. While it is true that bacteria and cyanobacteria are now both classified as procaryotes, that fact alone is not sufficient to motivate the art worker as the PTO contends. As the PTO concedes, cyanobacteria and bacteria are not identical; they are classified as two separate divisions of the kingdom Procaryotae.21 Moreover, it is only in recent years that the biology of cyanobacteria has been clarified, as evidenced by references in the prior art to "blue-green algae." Such evidence of recent uncertainty regarding the biology of cyanobacteria tends to rebut, rather than support, the PTO's position that one would consider the cyanobacteria effectively interchangeable with bacteria as hosts for expression of the claimed gene.

One notes that the case defines"expression": "Expression" of a gene refers to the production of the protein which the gene encodes; more specifically, it is the process of transferring information from a gene (which consists of DNA) via messenger RNA to ribosomes where a specific protein is made

Sunday, February 17, 2013

CBS "60 Minutes" on February 17, 2013

The first story is on Israel's "Iron Dome," which intercepts incoming attacking missiles.

Scott Pelley does the second story on the ship "Africa Mercy."

Third, Steve Kroft on Maggie Smith and Downton Abbey.

"Iron Dome" has been called a game changer. Ashkelon. Ehud Barak was interviewed. The soldiers have to make a decision to fire the rocket. Idi Youri. Without Iron Dome, Israel would have invaded Gaza. Each Iron Dome interceptor costs at least $75,000. The incoming rocket might cost $500. Video of a protest in Ramallah. Arab prof to US: if you take our money, you must take our advice. $270 million from the US for Iron Dome. US promising another $680 million.

"Africa Mercy" is the closest thing to a time machine you will ever see. The intersection of courage and compassion. 500 feet in length; 8 decks. 90 nurses; 15 doctors; 78 beds and 6 operating rooms. Togo, West Africa. Most live on $2 a day. Maxillo facial procedures.

Ship also goes to Senegal, Sierra Leone, Liberia. Gary Parker is the chief surgeon. In 1995, a patient came in with a tumor so big that she had difficulty breathing. Tooth enamel that won't stop growing. Fate matta: we know you are in there. Diseased jaw is replaced by titanium piece; then later hip bone transplanted on titanium. Ally Chandra is a nurse from New Jersey: I could never go back (to NJ). Of patients: Someone has to look at them and say "you're human." You find a way to connect with them. In 1978, Don Stevens of Texas started "mercy ships." 1) Corporate sponsors 2) doctors pay their own way, for example with contributions from churches. Ally: I miss strawberries and I miss fresh milk. Gary Parker met his wife Susan on board. Gary's mom lives in Santa Barbara, CA. Africa spent 5 months in port; 281 tumors removed.

Dame Maggie Smith of Downton Abbey, which concludes its season tonight on PBS. Steve mentions Marigold Hotel and Quartet. Smith: I am familiar to people now. This is due to the tv set. Violet: Countess of Grantham. Maggie: I haven't watched it (Downton Abbey).
The delight of acting. Broadway debut at ag 21. Prime of Miss Jean Brodie. Won Oscar in 1969. 1978: California Suite, with Michael Caine. Director said to spikey. Jagged. "Old people are scary, but I don't know what you do." Julian Fellows: it's about whether this scene works. Her bothering is worth attending to and listening to. Dustin Hoffman joined the interview. The horrible thing about getting old is you have breakfast every half hour.

CBS Sunday Morning for February 17, 2013

Charles Osgood introduced the stories for Sunday, February 17, 2013. When a meteor fell out of the blue, people all over the world took notice. Rita Braver does the cover story, "Out of the Blue," on searching for space rocks. Second, the borscht belt by Richard Schlesinger. Old Jews Telling Jokes. Jake, I have to, but you? Beyond the Catskills. Third, Mark Strassman on the SS United States. Fourth, Lee Cowan on Wayne Brady. Fifth, Kelly Cobyea on murder charges. Steve Hartman. Mo Rocca. Headlines: Russian officials on damages from meteor impact. South African tv aired reality show starring shooting victim. Bomb in Pakistan. USAToday on White House immigration bill. 3500 couples get married in South Korea. Weather: cold and windy from Great Lakes to New England.

Osgood illustrated an actual meteorite to open the story by Rita Braver. The Russian meteor from Friday, February 15, 2013. Braver brings up 65 million year old event that did in the dinosaurs (6 mile wide). The Smithsonian has a collection overseen by Linda Wellsenbach. Most of the meteorites come from asteroid belt. A meteor is coming down, and when it hits earth it's a meteorite. The "Antarctic Search for Meteorites" program. Ralph Harvey of Cleveland Case Western has been leading 37 year old program since 1991. The meteorites in the Antarctic are well preserved. The "catch" goes to Johnson Space Center, Building 31. Elephant Marine from Mars. Once water on Mars. Since 1976, cost has been 25 million. Poor person's space mission. 20,000 meteorites have been recovered. Kerry Corrigan is at Smithsonian. 4 billion years of history. Russian meteor is estimated at 50 feet in diameter. [Braver's piece was a bit outdated, as NASA changed its estimate: But late Friday, NASA revised its estimates on the size and power of the devastating meteor explosion. The meteor's size is now thought to be slightly larger — about 55 feet (17 m) wide — with the power of the blast estimate of about 500 kilotons, 30 kilotons higher than before, ]

Almanac. Feb. 17, 1972. 15,000,734 VW rolled off assembly line, surpassing Model T production record. In 1949, only two beetles sold in the US. 1973 Movie Sleeper. Harvey the Love Bug. Last Beetle built in Mexico. Now Beetle is 4th in production. Model T still finished number 8 in all time production. Toyota Corolla is number 1.

"The Building of a Ship" by Longfellow introduces story on SS United States, now located in Philadelphia. Susan Gibbs is director of SS United States Conservancy. William Gibbs was her grandfather. Harvard dropout. "A Man and His Ship." In WWII, 3/4 of ships designed by Gibbs' firm. 2000 passengers or 14,000 troops. Design was classified. July 1952 first Atlantic crossing. Return time set current record. 44 mph. "The Big U." In 1958, Ros McPherson: the ship was colorblind. Treated like regular human beings. In 1969, SS United States was mothballed; 1984 fittings auctioned off. Producer Charles Howland is a collector of SS United States memorabilia. Convert into museum/hotel. 150 million to 300 million dollars.

Kelly Cobyea on Oscar Pistorius. Clip of speech by Oscar's uncle. A darker side? 26 year old arrested on Valentine's Day in Praetoria. South Africa has high crime rate. 6 million of 50 million own goods. Mike Kendrick interviewed. Reeva Steenkamp tweet.

Pulse. Add to Rushmore? Reagan 21%; Obame 18%.

Osgood gives quote from Grant Memoirs. Mo Rocca on Grant's final battle. The present Mt. McGregor Correctional Facility in New York was location of Grant's final days. Tim Welch runs Grant Historical Site. Summer of 1885. Grant had only $189 in his checking account. $50,000 and 70% of sales offer by Mark Twain. H.W. Brands, biographer. Grant spent five weeks at cottage at Mt. McGregor. Grant could not lay down because of throat cancer. Cocaine water used to bathe throat and tongue. Grant wrote notes, and did not speak. Grant could write 10,000 words in a day. Grant died on July 23, 1885. 8 minutes after 8. Two pallbearers were Confederate generals. Memoirs brought in $400,000. Grant memoirs were first celebrity memoirs. One of the great writers in American history.

Two months since Newtown, CT. Steve Hartman does story on Bill Sherlock. Morning of Dec. 14, 2012: big kiss. Mary Sherlock became victim. Mary heard gunfire and ran toward it. Got Masters in psychology. Last week, Bill went to warehouse where cards and gifts are being stored. Pink erasers; someone just erased her.

Stand up comedy that stands the test of time. Henny Youngman. Richard Schlesinger on The Borscht Belt. Milton Berle and George Burns. Grossingers, Kutshers, Concord. Stewie Stone. Van Harris. The Concord had four doors in back, when opened light came in. A cultural feel; a rhthym. Jerry Seinfeld. Picture of a ruin, where the Concord used to be. Mark Kutsher owns the only surviving hotel in the Catskills. Wilt Chamberlain played basketball there. Play: Old Jews Telling Jokes. Peter Geffers. Creative invention of Borscht Belt of the 1950s and 1960s. You can tell the jokes without the buildings being there. "Again with the string?"

Wayne Brady of "Let's Make a Deal," interviewed by Lee Cowan. Clover from Sophia the First. The guy who can do whatever you want him to do. He watched Dean Martin. Let's Make a Deal turned 50 years old last month. Clip of Monty Hall from 1963, Hall is now 91 years old. All I have to do is entertain and everything else falls into place. Wayne Brady is from Orlando, FL. Whose line is it, anyway? Host for Miss America in 2002. "The Wayne Brady Show." Wayne Brady The Thug. A Long Time Coming, rendition of Sam Cooke classic. Regular headliner in Vegas. Always consistently just been me.

Westminster Kennel Show . "Banana Joe," an affenpinscher, won over Matisse, the Portuguese water dog; Honor, a bichon frisé; Jewel, an American foxhound; Swagger, an Old English sheepdog who got most of the crowd’s cheers; Oakley, a German wirehaired pointer; and Adam, a smooth fox terrier.

Opinion by Luke Burbank on Manti Te'o. Burbank had an imaginary girlfriend, Tiffany. Every relationship has its pros and its cons. We are looking for a person who cares about us. When we find that person, we cling to them.

Thursday, February 14, 2013

Impax loses at CAFC in AMRIX case

For the foregoing reasons, this court dismisses Impax’s appeal of the district court’s preliminary injunction for want of jurisdiction, and affirms the district court’s conclusion that no triggering event under § 3.2(c) of the settlement agreement has occurred entitling Impax to enter the generic extended-release cyclobenzaprine hydrochloride market.

JONATHAN E. SINGER, Fish & Richardson P.C., of Minneapolis, Minnesota, argued for plaintiffs-appellees and with him on the brief was WILLIAM J. MARSDEN, JR., of Wilmington, Delaware.

CAFC discusses enablement in Cephalon v. Watson

After a bench trial, the district court found that Watson’s ANDA products did not infringe and held the asserted patents invalid for lack of enablement. Cephalon, Inc. v. Watson Pharms., Inc., 769 F. Supp. 2d 729, 761 (D. Del. 2011). We reverse on the issue of enablement because Watson failed as a matter of law to show with clear and convincing evidence that Cephalon’s patents require undue experimentation to practice the invention. As to the noninfringement finding, the district court did not clearly err. Thus, we reverse– in–part and affirm–in–part.

As to the law of enablement:

Enablement is a question of law that we review with- out deference, based on underlying factual inquiries that we review for clear error. MagSil Corp. v. Hitachi Global Storage Techs., Inc., 687 F.3d 1377, 1380 (Fed. Cir. 2012). (...)

This requirement is met when at the time of filing the application one skilled in the art, having read the specification, could practice the invention without “undue experimenta- tion.” In re Wands, 858 F.2d 731, 736–37 (Fed. Cir. 1988). Whether undue experimentation is required “is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations.” ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010) (citing Wands, 858 F.2d at 737).
The following factors may be considered when deter- mining if a disclosure requires undue experimentation:
(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.
Wands, 858 F.2d at 737 (“Wands factors”); Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1372 (Fed. Cir. 1999) (“The Wands factors, when applied from the proper tem- poral perspective . . . are a useful methodology for deter- mining enablement . . . .”). These factors while illustrative are not mandatory. Enzo Biochem, Inc., 188 F.3d at 1371. (...)

The burden of proof here is on Watson to show that the Khankari patents are invalid for lack of enablement by clear and convincing evidence. See Auto. Tech. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1281 (Fed. Cir. 2007).(...)

As an initial matter, the district court determined that Watson established a “prima facie” case of lack of enablement and that Cephalon failed to “rebut” Watson’s prima facie case. Cephalon, 769 F. Supp. 2d at 751, 754. Actually, the burden of proof was Watson’s alone. Be- cause we must presume a patent enabled, the challenger bears the burden, throughout the litigation, of proving lack of enablement by clear and convincing evidence. Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1469–70 (Fed. Cir. 1993). Hence, there is no formal burden-shifting framework when addressing the issue of enablement. Accordingly, we examine whether Watson met its burden of proof and determine that it did not.

Of the evidence:

Dr. Mumper’s ipse dixit statements that co-administration would be “difficult” and “complicated,” however, cannot be enough to constitute clear and convincing evidence. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determina- tion.”). Despite the district court’s finding according credibility to Dr. Mumper, his testimony is largely unsup- ported, and therefore, carries little weight in this analysis.

Of amount of experimentation:

In addition, exten- sive experimentation does not necessarily render the experiments unduly extensive where the experiments involve repetition of known or commonly used techniques. See Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1360 (Fed. Cir. 1998) (finding that the difficulty in pro- ducing certain antibodies could not be attributed to the shortcomings in the disclosure of the patent at issue, but rather, the difficulty was attributed to the technique commonly used during experimentation that generally required repetition). Thus, the focus “is not merely quan- titative, since a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance . . . .” PPG Indus., Inc., 75 F.3d at 1564 (citation and quotation omitted).

AND

See United States v. Telec- tronics, Inc., 857 F.2d 778, 786 (Fed. Cir. 1988) (“Since one embodiment is admittedly disclosed in the specifica- tion, along with the general manner in which its current range was ascertained, we are convinced that other per- mutations of the invention could be practiced by those skilled in the art without undue experimentation.”). Nor does Watson show that the resulting experimentation in this case would be excessive, e.g., that it would involve testing for an unreasonable length of time. See White Consol. Indus., Inc., 713 F.2d at 791. Unsubstantiated statements indicating that experimentation would be “difficult” and “complicated” are not sufficient. In light of the lack of evidence on the record of undue experimenta- tion, the district court erred as a matter of law in holding that Watson proved its case on enablement by clear and convincing evidence.

Wednesday, February 13, 2013

Google prevails over FM at CAFC

In this patent case, Function Media, L.L.C. (“FM”) appeals the district court’s invalidation of one of FM’s patents as indefinite and the jury’s verdict that two other FM patents are invalid and also not infringed. FM raises several other issues on appeal, including a claim that the district court abdicated to the jury its responsibility to construe disputed claim terms, an argument that the district court incorrectly denied its motion for a new trial on the grounds that the verdict was against the great weight of the evidence, and an argument that the verdicts of infringement and invalidity are irreconcilable. For the reasons explained below, we affirm.

As to functional claiming:

Furthermore, it is well established that proving that a person of ordi- nary skill could devise some method to perform the func- tion is not the proper inquiry as to definiteness—that inquiry goes to enablement. See Blackboard, 574 F.3d at 1385. Simply put,
[a] patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function. To allow that form of claiming under section 112, paragraph 6, would allow the patentee to claim all possible means of achieving a function.
Id. “Section 112, paragraph 6, is intended to prevent such pure functional claiming.” Id. (citing Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)). We therefore affirm the district court’s judgment that that claim 1 of the ’045 Patent is invalid for indefiniteness.

On claim construction:

We see no error in the district court’s denial of summary judgment. The district court construed this term, adopting FM’s proposed construction. To the extent that FM raises a claim construction argument here, FM may not object to the court’s decision to instruct the jury to apply the claim construction that FM itself proposed. See Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359, 1376 (Fed. Cir. 2010) (“As we have repeatedly explained, ‘litigants waive their right to present new claim construction disputes if they are raised for the first time after trial.’” (quoting Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 694 (Fed. Cir. 2008))). To the extent that FM attempts to couch as a claim construction issue the denial of summary judgment of infringement, we note that “a denial of summary judgment is not properly reviewable on an appeal from the final judgment entered after trial.” Glaros v. H.H. Roberson Co., 797 F.2d 1564, 1573 (Fed. Cir. 1986); accord Johnson v. Sawyer, 120 F.3d 1307, 1316 (5th Cir. 1997) (“[The Fifth Circuit has] held repeatedly that orders denying summary judgment are not reviewable on appeal where final judgment adverse to the movant is rendered on the basis of a subsequent full trial on the merits.”).

On an irreconciliable verdict:

We apply the law of the regional circuit to determine whether an argument that the verdict is irreconcilable has been waived. See Mycogen Plant Sci. v. Monsanto Co., 243 F.3d 1316, 1325 (Fed. Cir. 2001) (explaining that this court applies the law of the regional circuit to the issue of inconsistent verdicts because the issue is not unique to patent law). In the Fifth Circuit, a party need not object to the jury’s inconsistent verdict before the jury is dismissed in order to avoid waiver when the verdict is special and falls under Federal Rule of Civil Procedure Rule 49(a). Mercer v. Long Mfg. N.C., Inc., 671 F.2d 946, 947-48 (5th Cir. 1982) (“We know of no case in this Circuit holding that inconsistencies in special verdicts pursuant to Rule 49(a) are waived if not raised prior to release of the jury.”); see also id. at 948 n.1 (explaining waiver does not apply to verdicts under Rule 49(a), but it does apply to verdicts under Rule 49(b)). If the verdict falls under Rule 49(b), which covers general verdicts and general verdicts “with written questions on one or more issues of fact,” waiver applies if no objection is raised before the jury is dismissed. Stancill v. McKenzie Tank Lines, Inc., 497 F.2d 529, 533-35 (5th Cir. 1974) (“By failing to object to the form of the verdict and answers at the time they were announced by the jury, both parties waived any objection to inconsistencies under Rule 49(b).”).

Because FM failed to object to the verdict’s irreconcil- ability at the time the jury returned the verdict, FM can only avoid waiver if the verdict form is considered special. FM argues that the verdict was special because the ver- dict form asked the jury specific questions about validity and infringement. FM emphasizes that we have found similar forms to be “special” in Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1350 (Fed. Cir. 2010) and L&W, Inc. v. Shertech, Inc., 471 F.3d 1311, 1319 (Fed. Cir. 2006). Google urges that this verdict was general because it consisted of simple yes or no questions on infringement, anticipation, and obviousness. It says we have said such forms are general in i4i, 589 F.3d at 1265 and O2 Micro, 521 F.3d at 1358. It distinguishes the form in Comaper, which was labeled as a special verdict and included “special questions” such as whether the prior art was in public use before the critical date.

Application of T.F. Yen affirmed as obvious by Patent Trial and Appeal Board

In Ex parte T.F. Yen, decided on February 13, 2013, the Patent Trial and Appeal Board [PTAB] affirmed the Examiner's rejection for obviousness of claims 1-5, 7, 9-17 and 19-24 of application 12/015,861 which was filed January 17, 2008 [and published as 20090184030 on July 23, 2009].

The key piece of prior art was Habiby, US 4,021,333, issued in 1977, more than thirty years before the application was filed. A central part of the rejection noted:

As for the recited ranges of concentrations for the polar and non-polar solvents, Habiby teaches that the ratio of diluent to oil maybe chosen so as to provide optimum separation for the insoluble impurities. Therefore, it logically follows that one of ordinary skill in the art would have also selected the optimum ratio of polar to non-polar solvent to maximize the separation of impurities from the used oil. Also, where patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or the like, the burden is on the applicant to establish with objective evidence that the change in critical, i.e., it leads to a new, unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In the present case, the Examiner has properly pointed out that Appellants have not proffered any objective evidence of unexpected results attached to the claimed concentrations..

LBE is familiar with some of the work of T.F. Yen. For example, at Exxon Corporate Research in the 1980's, there was much discussion concerning a 40 Angstrom structure in petroleum asphaltenes (for Cu Kalpha radiation, a feature at 2 degrees, hence the "2 degree band.") While certain people claimed credit for discovering this, in fact, T.F. Yen had published on this feature years earlier.

Separately, LBE was critical of a certain paper of T.F. Yen relating to a supposed method of determining fractional aromaticity of petroleum asphaltenes by comparing areas of the "gamma band" and "(002) band". Matters got interesting when a later group of workers made the same assertion, but citing to different papers as justification. Publishing their work in the journal "Energy and Fuels" of the American Chemical Society, these workers actually were citing to one non-existent paper and two which were irrelevant. The saga is in part documented in a paper given at SSI-11, which includes the text:

In my own experience, I came across one episode which illustrated the inability of the scientific community to deal with each side of the coin. In a paper by D. L. Wertz and M. Bissell, Energy & Fuels, 1994, 8, 613-617 on the diffraction of the graphene layer ["(002)"] peak in bituminous coals, the authors stated that the diffraction peak was "far too intense to be caused by amorphous scattering and far too broad to be caused by conventional diffraction." The authors cited three papers to justify this assertion. Of three papers relied upon to prove the statement, which was the key assumption in the paper, one was non-existent, one was irrelevant and one supported a contrary position. Following use of
the key assumption, the authors utilized an undefined short range interference function to manipulate the x-ray diffraction data of the paper. The modified data led to a remarkable conclusion: that analysis of a peak related to interference between aromatic entities (sp2 hybridized carbon) could predict the amount of aliphatic carbon (sp3 hybridized carbon). Pertinent prior work on diffraction of "poorly crystalline" carbonaceous systems with sp2 and sp3 carbon was ignored.

I contacted the editor of the journal. Of the non-citation and mis-citation issues, nothing was done, and in fact the mis-citation was repeated in a later paper. Of the issue of arguably bad science, the key assumption was re-characterized as the existence of amorphous and crystalline phases in the coal. For reference, the "crystalline" (002) peak in one coal had a full-width at half-maximum (fwhm) of 3.4° (Cu) while the other coals had fwhm of 6-10°. Thus, the "crystalline" peak was in the range most people would consider "poorly crystalline." For example, the fwhm
(° 2θ Cu) of liquid 1,3 dimethyl adamantane is 2.75, of liquid hexadecane 5.00 and of liquid 1-methyl naphthalene 5.71. The undefined short range interference function was found to be empirical data on carbon black, which was no where presented in the paper. Thus, no reader of the paper had the information on the short range interference function to perform manipulations on the data of the paper, or on any other system.

In analyzing the cites of this paper to other papers, and the cites of other papers in this journal, I noticed that there was an interesting trend of papers in the journal to cite other papers in the same journal. In less than five years of existence, articles in the journal cited more to other articles in the journal than to articles in any other single journal, in spite of the existence of a comparable journal (Fuel) which had been in existence for more than 50 years.

Obviousness affirmed in Ex parte SINGHAL

In our view, Appellants’ general statements regarding Chen’s disclosure is not responsive to the Examiner’s specific findings made in the Answer. Further, Appellants are reminded that merely reciting what the claims recite, and making a general allegation of patentability does not constitute a persuasive argument. See Ex parte Belinne, No. 2009-004693, slip op. at 7 – 8 (BPAI Aug. 10, 2009) (informative).

And, yes, KSR was cited:

Thus, the modification of Oh to apply a window function after skipping frames, as taught or suggested by Chen, merely represents the combination of familiar elements to yield predictable results. See KSR Int’l, Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Therefore, we agree with the Examiner that the combination of Oh and Chen teaches or suggests “applying a window function to the remaining frames,” as recited in claim 1.

[0005] In many audio applications, an audio signal may be modified or processed to achieve a desired characteristic or quality. One of the characteristics of an audio signal that is frequently processed or modified is the speed of the signal. When sounds are recorded, they are often recorded at the normal speed and frequency at which the source plays or produces the signal. When the speed of the signal is modified, however, the frequency often changes, which may be noticed in a changed pitch. For example, if the voice of a woman is recorded at a normal level then played back at a slower rate, the woman's voice will resemble that of a man, or a voice at a lower frequency. Similarly, if the voice of a man is recorded at a normal level then played back at a faster rate, the man's voice will resemble that of a woman, or a voice at a higher frequency.

[0006] Some applications may require that an audio signal be played at a fast rate, while maintaining the same frequency, i.e. keeping the pitch of the sound at the same level as when played back at the normal speed.

[0007] Further limitations and disadvantages of conventional and traditional approaches will become apparent to one of ordinary skill in the art through comparison of such systems with the present invention as set forth in the remainder of the present application with reference to the drawings.

“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

Obviousness reversed in Ex parte Diamond

Within Ex parte Diamond , KSR is cited to sustain a REVERSAL of an obviousness rejection:

We agree with Appellants that the Examiner has failed to set forth a prima facie case of obviousness. As the Supreme Court pointed out in KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” Rather, the Court stated:
[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does . . . because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.
Id. at 418-419 (emphasis added); see also id. at 418 (requiring a determination of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue”) (emphasis added).

Following a restriction, the scope of the appeal is limited to the elected species:

When the Examiner has required the Applicant to elect a chemical species for examination, the issue on appeal is the patentability of the elected species. We thus limit discussion to that single issue and take no position respecting the patentability of the broader generic claims, including the remaining, non-elected species. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987).

Within the concurring opinion:

As to obviousness under 35 USC 103:

I concur with the majority Decision to reverse the obviousness rejection, but on a different basis. I am persuaded by Appellants’ arguments and do not find that the Examiner has set forth a prima facie case of obviousness on the cited evidence.

AND

A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
I therefore agree with Appellants that Kan-Mitchell teaches away
from the cited combination of references and that a person of ordinary skill, upon reading the Kan-Mitchell reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.

Obviousness-type double patenting

Claims 1-3, 6-10, 13-17, 19-42 and 44-45 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 2, 5, 7, 15-19, 26, 27, 30, 33-34, 43, 45 and 85- 86 of copending Application No. 10/871,707 (PGPUB 20050079152).
“Appellants submit that they have acknowledged the provisional double-patenting rejection, the Examiner has noted this acknowledgement, and that Appellants are not required to address the merits of the provisional double-patenting rejections until such time as the copending application issues and the rejection [is] made non-provisional.” (App. Br. 16.) Appellants cite no specific authority for not reaching the merits of the obviousness-type double patenting rejection.
However, MPEP 804(B)(1) states:
If “provisional” ODP rejections in two applications are the only rejections remaining in those applications, the examiner should withdraw the ODP rejection in the earlier filed application thereby permitting that application to issue without need of a terminal disclaimer. A terminal disclaimer must be required in the later-filed application before the ODP rejection can be withdrawn and the application permitted to issue. If both applications are filed on the same day, the examiner should determine which application claims the base invention and which application claims the improvement (added limitations). The ODP rejection in the base application can be withdrawn without a terminal disclaimer, while the ODP rejection in the improvement application cannot be withdrawn without a terminal disclaimer.

Leading to:

Thus, Appellants‟ argument that they are not required to address the merits of the provisional double-patenting rejections until such time as the copending application issues and the rejection is made non-provisional, is not applicable in the present case.
Copending Application No. 10/871,707 was originally filed on June 17, 2004, and is the earlier filed application. The present application was filed on December 29, 2005 claiming priority to a provisional application filed December 29, 2004. Thus, the pending application is not the earlier application and the examiner cannot withdraw the ODP rejection in the present application to permit it to issue without need of a terminal disclaimer.
Moreover, recent activity in the copending application includes the filing of an RCE application on Sept. 26, 2011, and a Rule 1.132 Affidavit on the same date. Therefore, the provisional obviousness-type double patenting rejections are not the only remaining rejections in each application, and the present application is the later filed application, so Appellants are required to filed a terminal disclaimer in the present application or address the merits of the obviousness-type double patenting rejection. MPEP 804(B)(1). As Appellants have failed to address the merits of the obviousness-type double patenting rejection and there is no terminal disclaimer of record in the application, the rejection is summarily affirmed.
Even though the obviousness rejection is reversed, all claims remain subject to the affirmed obviousness-type double patenting rejection, and therefore, the rejection of the claims is affirmed.

Board reverses in Ex parte GERHARDINGER

The Board reversed the examiner in Ex parte GERHARDINGER, which decision turned in part on the concept of inherency:

ood does not disclose where the triac would be located in any of the surrounding frame construction, the ballast, or the door frame and certainly does not discuss any relation between the triac and a thermally conductive area of the surrounding frame construction, the ballast, or the door frame. Further, while it may be possible to have the triac in Wood in direct thermal contact with a thermally conductive area of the surrounding frame construction, for example, the mere possibility of this arrangement is not sufficient to establish a prima facie case of inherent anticipation. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (internal citation and quotations omitted).

Tuesday, February 12, 2013

Shell Oil loses at Board

As the Supreme Court has pointed out, however, “the mere existence of differences between the prior art and an invention does not establish the invention’s nonobviousness.” Dann v. Johnston, 425 U.S. 219, 230 (1976).

Thus, while Appellants have, as noted above, pointed out the differences between claim 1 and the references cited by the Examiner, Appellants provide no clear or specific explanation as to why the cited references would have failed to suggest the claimed process to an ordinary artisan.

As to routine optimization:

Thus, despite the differences in the volumes of stripping gas used in claim 1 as compared to Gupta and Valbert, given the similarities between the prior art processes and the claimed process, and the general teachings in the prior art that applying stripping gas removes undesired byproducts, we agree with the Examiner that, absent evidence to the contrary, an ordinary artisan would have reasoned that the volumes of gas recited in claim 1 would have been useful for removing undesired byproducts from the polyether polyols produced using a DMC catalyst. Moreover, Appellants point to no clear or specific evidence undercutting the Examiner’s finding that an ordinary artisan, advised by Jochem Brons, Gupta, and Valbert of the desirability of stripping crude polyether polyol products with inert gases, would have considered it a matter of routine optimization to determine suitable volumes of gas to use.

Unexpected results arose:

As the Federal Circuit has explained, “[w]here ‘the difference between the claimed invention and the prior art is some range or other variable within the claims . . ., the [applicants] must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results.’” Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (quoting In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)); see also Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984) (claimed device that differed from the prior art with respect to dimensional limitations but performed and operated in the same manner as the prior art device held obvious).

The result:

In sum, as Appellants’ arguments do not persuade us that the Examiner failed to make out a prima facie case of obviousness as to claim 1, and as Appellants have not advanced evidence of unexpected results adequate to outweigh the Examiner’s evidence of prima facie obviousness, we affirm the Examiner’s rejection of claim 1 over Jochem Brons, Gupta, and Valbert. Claims 2-8 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

In re Aller is cited:

Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” (id. at 6 (citing In re Aller, 220 F.2d 454)).

Aruze Corp. loses slot machine case at Board

The abstract for the application in question, from published US 20080064473:

A slot machine of the present invention comprises: a symbol display device capable of variably displaying a plurality of symbols; an image display device; and a controller, the controller programmed to execute the processing of: (A) executing a game in which the plurality of symbols are variably displayed and then stop-displayed to the symbol display device after game media are BET in number equal to or less than a previously set maximum number of BETs, and game media are paid out in number according to the plurality of symbols stop-displayed or a combination thereof; (B) shifting a mode from a non-insurance mode to an insurance mode on condition that a predetermined number of game media is inserted; (C) counting the number of games played after shifting to the insurance mode, in the insurance mode; (D) paying out a predetermined number of game media when the number of games counted in the processing (C) reaches a specific number; (E) displaying to the image display device a specific payment image showing that a payment based on the number of games reaching the specific number is being processed during a period when game media are paid out in the processing (D).

From the Board decision in Appeal 2011-004252.

Appellant contends that because there is “no indication in Okada or Walker that this problem about payouts was a known problem in the gaming art . . . [i]t is improper to assume that the problem was known in determining whether Appellant’s providing of a specific payment image was an obvious solution to the problem.” Id. (citing In re Sponnoble, 405 F.2d 578, 585 (CCPA 1969)).

BUT

Appellant, however, has not presented evidence that one of ordinary skill in the art would not have recognized the true cause of the alleged problem or that there was any confusion or doubt at the time of invention as to the cause of player confusion, even assuming such confusion in fact existed. See In re Sponnoble, 405 F.2d 578, 586 (CCPA 1969) (indicating that appellant “discovered the cause of the moisture transmission to be the passage of moisture through, rather than around, the center plug” and that the “crux of the matter in this case is the discovery by appellant that passage through the center plug was a major cause of moisture transmission”); see also Cross Medical Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (noting that in Sponnoble, “those of ordinary skill in the art . . . recognized a moisture-transfer problem . . . [but] believed that moisture was transmitted around the plug . . . [whereas] Sponnoble discovered that moisture traveled through the plug”). Thus, Appellant has not presented sufficient evidence to persuade us that the facts of this case are analogous to those of In re Sponnoble.

Furthermore, we agree with the Examiner that the inquiry into whether an alleged invention would have been obvious to one of ordinary skill in the art at the time of invention is not limited “only to the problem the patentee was trying to solve.” Ans. 8 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007)). Rather, “[u]nder the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR, 550 U.S. at 420.

SeparatelyAs such the failure of one reference to disclose each and every element of the claims is inapposite where a second reference discloses the missing element(s). See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references”); see also In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (same); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (“The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art.”).

From footnote 1:

Appellant has not separately argued claims 2, 3, and 5-7. See App. Br. 6 (“Claim 1 is discussed as representative of the claims in this ground of rejection.”) Thus, claims 2, 3, and 5-7 stand or fall with claim 1 from which they depend. 37 C.F.R. § 41.37(c)(1)(vii) (2011); e.g., In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011).

GE/NBC lose at the Board

Our reviewing court stated in Leapfrog Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir. 2007) that one of ordinary skill in the art would have found it obvious to combine an old electromechanical device with electronic circuitry “to update it using modern electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost. . . . The combination is thus the adaptation of an old idea or invention . . . using newer technology that is commonly available and understood in the art.” Id. at 1162.

And Venner:

In re Venner provides further support for the proposition that automation of a manual process would be obvious. See In re Venner, 262 F.2d 91, 94 (CCPA 1958) (Appellant argued that claims to a permanent mold casting apparatus for molding trunk pistons were allowable over the prior art because the claimed invention combined “old permanent-mold structures together with a timer and solenoid which automatically actuates the known pressure valve system to release the inner core after a predetermined time has elapsed.”). The court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.

Applicants' specification is cited:

Arguably this and the preceding portions of Appellants’ Specification teaches a known, non-automated prior art method

KSR is cited:

In KSR, the Court stated “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

Kahn is cited for "articulated reasoning"-->

Finally, we note that the U.S. Supreme Court has held that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” Id. at 419. Instead, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).

"Trademark protection in color"

That covers the primary colors a bit, but your education in colors as trademarks doesn't end there. The universities of Texas and North Carolina have their own colors too. For UT, it's burnt orange and white, with the orange otherwise known as Pantone Color #159. And for UNC, it's "Carolina Blue and White," with the blue otherwise known as Pantone Color #278.

And, yes, one might review the statement: Eight years ago, in Qualitex Co. v. Jacobson Products Co., the U.S. Supreme Court ruled that individual colors can be trademarked if they indicate, in consumers' minds, the source of the goods or services they're connected with, which is known as "secondary meaning." Hmmm, 2013 - 8 is 2005. Are there any editors or fact checkers at Bloomberg BNA??

Drabe case turns on the meaning of "linear"

The specification does not expressly define “linearly” or “linear,” so it is appropriate to consult a general dictionary definition of the word for guidance in determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). “Linear” is well understood to mean “of, relating to, resembling, or having a graph that is a line and esp. a straight line . . . involving a single dimension.” MERRIAM- WEBSTER’S COLLEGIATE DICTIONARY (11th ed. 2005); see also MCGRAW- HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS, 1209 (6th ed. 2003) (“1. Of or relating to a line. 2. Having a single dimension.”). Based on this definition we would expect structure extending linearly along an axis to resemble a line oriented along the longitudinal axis, which here would mean, at a minimum, that the dimension along the axis should be larger than the dimensions transverse to that axis.

This is not the case with respect to the contact part 6, as is evident from figure 1. Accordingly, we disagree with the Examiner’s finding that DE ’819 discloses a spring portion that extends linearly along the longitudinal axis. Because the Examiner’s rejection of claims 10-15 is based on this finding, we do not sustain that rejection.

A "working lumen" must be capable of working

The PTAB reversed the examiner in Ex parte Saadat wherein the case turned on the meaning of "working lumen."

Noting the law that

a claim element cannot be interpreted so broadly so as to read the limitation out of the claim. See Texas Instr. Inc. v. United States Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (Claim language cannot be mere surplusage. An express limitation cannot be read out of the claim). Further, claim terms are not interpreted in a vacuum, devoid of the context of the claim as a whole.

the Board reversed the Examiner, observing

The evidence of record fails to establish that a “working” camera fixed within the interior of a device assembly (FF2) would have been understood by a person of ordinary skill in the art to be a “working lumen” (see, e.g., Ans. 11). Rather, a broadest reasonable interpretation of the phrase “working lumen” in light of the Specification is consistent with the Appellants‟ view that a “working lumen” is a lumen capable of facilitating the passage of tools (FF1; see also, App. Br. 13). An occupied channel or cavity would not be capable of this function.

PTAB invokes KSR in Ex parte Keimel

The Supreme Court has emphasized that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).

As noted by the Court in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416.

(...)
Applying the KSR standard of obviousness to the findings of fact, we agree with the Examiner that the ordinary artisan would have reasonably found it obvious to diagnose and treat Fabry disease heart damage using the delivery system of Struijker-Boudier as controlled by the enzyme sensors of Martinez. Such a combination is merely a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417.

The meaning of determining

Claim 1 recites a “determining” step. One relevant plain meaning of “determine” is “to settle or decide by choice of alternatives or possibilities.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 315 (10th ed. 1999). Accordingly, the multiple access communication system of claim 1 chooses between either responding or not responding, conditional upon whether “the reverse-link performance drops below the predetermined threshold.” Such an interpretation of the “determining” step is consistent with the explanation in the Specification that “[u]pon recognition of channel degradation, the access point may stop responding 412 to the ACK messages sent from the access terminal, and then switch 416 to transmission of data not using incremental redundancy.”

Whereas the wrap illustrated does not include any inelastic features on the pouch, we decline to read such a limitation from the specification into the claim because the claim language is broader. See Superguide, 358 F.3d at 875. We find no reasonable basis to conclude that this limitation would be understood by one of ordinary skill in the art when reviewing the specification so as to preclude any inelastic portion on an elastic pocket

Note also:

Rejection 4 (Ground 8)

The Examiner rejects claim 3 as anticipated by Lerner (RAN 18). However, claim 3 has been rejected as unpatentable in three different rejections, namely, Rejections 1, 2 and 6 discussed supra. Thus, we find it unnecessary to reach this rejection.

Matt Damon mentions the most life-saving invention of all time

Monday, February 11, 2013

In re Hood invokes KSR

To the extent that Appellants are contending that Penner is not enabled, a reference is presumed to be enabled for the purpose of an anticipation rejection. See In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012) (“[W]e therefore hold that, during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement.”)

KSR is invoked:

The Supreme Court has emphasized that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).

As noted by the Court in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. (...)

Applying the KSR standard of obviousness to the findings of fact, we agree with the Examiner that the ordinary artisan would have reasonably found it obvious to encapsulate either the active drugs or prodrugs of Penner into a microsphere as taught by Unger, since Unger teaches that ultrasound can be used to activate prodrug-containing microspheres (FF 15). Such a combination is merely a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417.

(...)

Such a combination is merely a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417.

Of substitution / obvious design choice:

An “[e]xpress suggestion to substitute one equivalent for another need not be present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982). As noted by the Court in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” 550 U.S. at 421.

Yes, In re Best is cited:

We find that the Examiner has the better position. The Examiner contends that any change in the volume of the solution by contacting the drug with delivery fluid will necessarily modify the solubility. Since solubility is defined as “[t]he amount of a substance that can be dissolved in a given amount of solvent,”10 it is inherently necessary that as the amount of solvent changes, the solubility changes as well. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical . . . the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”) Appellants have provided no evidence to satisfy this burden.

RCEs and appeals

On July 1, 2010, Appellants filed a Notice of Appeal. On February 1, 2013, Appellants filed a Request for Continued Examination (RCE) under 37 C.F.R. § 1.114. The RCE will be treated as a request to withdraw the appeal.

On May 11, 2010, Appellants filed a Notice of Appeal. On February 1, 2013, Appellants filed a Request for Continued Examination (RCE) under 37 C.F.R. § 1.114. The RCE will be treated as a request to withdraw the appeal.

Examiner reversed in Ex parte Kissel

The Examiner stated in the Answer that “[e]very ground of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory actions) is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading ‘WITHDRAWN REJECTIONS’” (Ans. 3). The Answer does not include a section with the subheading “WITHDRAWN REJECTIONS.”

Of law

“[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. ” Net MoneyIN, Inc. v. Verisign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008).
The words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). (...)
“claims are not to be read in a vacuum, and limitations therein are to be interpreted in light of the specification in giving them their ‘broadest reasonable interpretation.”’ In re Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983) (quoting In re Okuzawa, 537 F.2d 545, 548 (CCPA 1976) (emphasis by Marosi). This is the standard for claim interpretation in both original examination and re-examination. In re Yamamoto, 740 F.2d 1569, 1571-73 (Fed. Cir. 1984).

Semiconductor Energy presents assignor estoppel issue

Semiconductor Energy Laboratory Co., Ltd. (“SEL”) appeals from the order of the United States District Court for the Northern District of California dismissing SEL’s complaint with prejudice pursuant to Fed. R. Civ. P. 12(b)(1) for lack of subject matter jurisdiction under 28 U.S.C. § 1338(a) and declining to exercise supplemental jurisdiction over a number of state law claims. Semiconductor Energy Lab. Co. v. Nagata, No. 11-02793, 2012 WL 177557, at *8 (N.D. Cal. Jan. 23, 2012). Because the district court did not err in holding that there is no federal cause of action based on assignor estoppel and did not abuse its discretion in declining supplemental jurisdiction over the state law claims, we affirm.

The facts of the case are more interesting than the legal conclusions. The defendant, Nagata, is a named inventor of the patent in question ( U.S. Patent 6,900,463 ) and Nagata assigned his rights to SEL’s founder Dr. Shunpei Yamazaki. Nagata helped SEL with one litigation BUT served as a fact witness for Samsung, a later infringement defendant. Therein, Nagata repudiated his signature on declaration and assignment documents. Thus, SEL raises "assignor estoppel" although the fact of assignment is at issue. At stake before the CAFC is whether the case belongs in federal court.

Of the law, the CAFC noted:

Federal courts may hear only those cases over which they have subject matter jurisdiction. See Dow Jones & Co., Inc. v. Ablaise Ltd., 606 F.3d 1338, 1348 (Fed. Cir. 2010) (“Subject matter jurisdiction is a threshold requirement for a court’s power to exercise jurisdiction over a case.”); see also Willy v. Coastal Corp., 503 U.S. 131, 137 (1992) (“A final determination of lack of subject-matter jurisdiction of a case in a federal court, of course, precludes further adjudication of it.”). Subject matter jurisdiction may be based upon either diversity of citizenship or federal question jurisdiction, and where, as here, appellants do not claim diversity of citizenship, there must be federal question jurisdiction. ExcelStor Tech., Inc. v. Papst Licensing GmbH & Co. KG, 541 F.3d 1373, 1375 (Fed. Cir. 2008).

To invoke federal question jurisdiction, a complaint must either plead a federal cause of action or necessarily implicate a substantial issue of federal law. In pertinent part, 28 U.S.C. § 1338(a) provides that “district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents.” The Supreme Court has interpreted the “arising under” lan- guage of § 1338(a) in the same fashion as that of 28 U.S.C. § 1331, which governs the federal courts’ original jurisdic- tion over federal questions. The Court thereby incorpo- rated the principles underlying the “well pleaded complaint” rule into the root of our patent law jurisdic- tion, stating:

[Section] 1338 jurisdiction . . . extend[s] only to those cases in which a well-pleaded complaint es- tablishes either that federal patent law creates the cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a sub- stantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.
Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 808–09 (1988) (citations omitted); see also Cedars-Sinai Med. Ctr. v. Watkins, 11 F.3d 1573, 1577–78 (Fed. Cir. 1993). In appropriately dismissing SEL’s complaint for lack of subject matter jurisdiction, the district court correctly held that SEL neither established that federal patent law created a cause of action as pleaded nor that federal patent law was a necessary element of its claims.

The only claim asserted by SEL that purports to arise under federal law, which SEL labeled “Declaratory Judgment – Violation of Federal Patent Law,” was premised on the doctrine of assignor estoppel. As we explained in Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220, 1224 (Fed. Cir. 1988), assignor estoppel is an equitable doctrine that prohibits an assignor of a patent or patent application, or one in privity with him, from attacking the validity of that patent when he is sued for infringement by the assignee. See also Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 412 F.3d 1331, 1336 (Fed. Cir. 2005) (“The doctrine of assignor estoppel prevents a party that assigns a patent to another from later challenging the validity of the assigned patent.”). Assignor estoppel is thus a defense to certain claims of patent infringement.

Estoppel is a defense:

Despite SEL’s contentions, assignor estoppel is a form of estoppel, and with rare exception, estoppel is a shield; it is an affirmative defense, not a claim for relief on its own. See, e.g., Fed. R. Civ. P. 8(c)(1) (estoppel is an af- firmative defense). Indeed, the Supreme Court has explic- itly recognized assignor estoppel to be “the functional equivalent of estoppel by deed.” Diamond Scientific, 848 F.2d at 1225 (citing Westinghouse Elec. & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342, 348–49 (1924)). Under the doctrine, an assignor sued for infringement may not defend or counterclaim that the patent he as- signed is invalid or unenforceable. Id. at 1226 (“When the inventor . . . has assigned the patent rights to another for valuable consideration, he should be estopped from de- fending patent infringement claims by proving that what he assigned was worthless.”). That is not the case here, and we are not inclined to transform the shield into a sword. The relief requested by SEL is akin to seeking a declaratory judgment of patent validity, which is not a viable cause of action. As the district court fittingly noted, “it simply makes no sense to use a doctrine intend- ed to estop a party from advancing a particular claim or defense in a legal case as a way to sue a non-party who has made no claim or defense in a legal case.” Semicon- ductor, 2012 WL 17757, at *4 (citation omitted).

The "substantial issue" matter-->

Even where a plaintiff does not state a federal cause of action, a federal court may still have subject matter jurisdiction if the plaintiff’s claims implicate a substantial issue of federal law. Grable & Sons Metal Prods., Inc. v. Darue Eng’g & Mfg., 545 U.S. 308, 312 (2005); Franchise Tax Bd. v. Constr. Laborers Vacation Trust, 463 U.S. 1, 13 (1983). Thus, a well-pleaded complaint presents a federal question only when the federal issue is sufficiently sub- stantial; there is no federal question when the federal law claim is insubstantial, implausible, or otherwise devoid of merit. Franchise Tax Bd., 463 U.S. at 8–9; Oneida Indian Nation v. Cnty. of Oneida, 414 U.S. 661, 666–67 (1974).

The CAFC noted:

We disagree, because the asserted federal issue was insubstantial, implausible, and without merit. For the same reasons that reliance on the doctrine of assignor estoppel does not present a substantial issue of federal law in connection with SEL’s purported federal claim, it likewise fails to provide a substantial issue of federal law justifying federal jurisdiction over SEL’s state law claims. SEL’s contrived federal issue is not a necessary element of its state law claims, which are each independent issues of state law, separately supported by alternative state law theories that do not necessarily require resolution of any disputed substantial question of federal patent law. See Grable, 545 U.S. at 314. “[T]he mere presence of a federal issue in a state cause of action does not automatically confer federal-question jurisdiction.” Merrell Dow Pharm. Inc. v. Thompson, 478 U.S. 804, 813 (1986). The district court was therefore correct in holding that SEL’s artful pleading did not give rise to federal subject matter jurisdiction.

Alternative theory:

Furthermore, in support of its analysis, the district court also determined that, even if SEL had invoked federal subject matter jurisdiction, it nevertheless failed to state a claim under its own count for “Violation of Federal Patent Law” based on the requirements for the application of the doctrine of assignor estoppel. Semicon- ductor, 2012 WL 17757, at *5–7. In particular, the dis- trict court determined that, under our precedent, the assignor estoppel doctrine would not bar Nagata’s testi- mony because (1) he was neither in privity with the defendant nor a party to the Wisconsin proceedings; and (2) his conduct in repudiating his signature on the as- signment documents in that case merely challenged the veracity of those underlying contracts, not the validity of the ’463 patent itself. Id. (citing Univ. W. Va. Bd. of Trs. v. VanHoorhies, 278 F.3d 1288 (Fed. Cir. 2002); Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d, 821 (Fed. Cir. 2001); Mentor Graphics Corp. v. Quicktum Design Sys., Inc., 150 F.3d 1374 (Fed. Cir. 1998); Shamrock Techs. v. Med. Sterilization, Inc., 903 F.2d 789 (Fed. Cir. 1990)). Nonetheless, because we conclude that the district court did not err in dismissing SEL’s complaint for lack of subject matter jurisdiction as insubstantial and without merit in the first instance, we need not address this alternative basis of decision.

About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.